To: | Reddit, Inc. (ipprosecutionsf@orrick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86944696 - AMA - 33427-6000 |
Sent: | 12/16/2016 9:34:59 AM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86944696
MARK: AMA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Reddit, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 12/16/2016
The applicant’s communication filed on December 14, 2016, in response to the Office Action dated June 29, 2016 has been received. The Office of the Deputy Commissioner for Trademark Examination Policy accepted a Letter of Protest received in connection with this application. The evidence presented in the letter was forwarded to the trademark examining attorney for consideration. See TMEP §1715.
Based upon this evidence, the trademark examining attorney is taking further action, as specified below. See TMEP §1715.02(b).
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is “AMA” in standard character form for “entertainment services, namely online non-downloadable videos of individuals responding to interview-style questions on the subjects of lifestyles, social issues, politics, foreign affairs, popular culture, the arts, humor, fiction, and literature” in International Class 041.
Reg. No. 2948665 is for “AMA AMERICAN MANAGEMENT ASSOCIATION” in a stylized form for “educational services; namely, providing courses and workshops, live and on video, in business management” in International Class 041.
Reg. No. 4385817 is for “AMA” in standard character form for “educational services, namely, providing courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management” in International Class 041.
Reg. No. 4324925 is for “AMA ENTERPRISE” with a design element for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.
Reg. No. 4328760 is for “AMA AMERICAN MANAGEMENT ASSOCIATION ENTERPRISE” with a design element for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.
Reg. No. 4157141 is for “AMA TV” in standard character form for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.
Reg. No. 4157142 is for “AMA TV” with a design element for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.
Reg. No. 4495407 is for “AMA ON DEMAND” in standard character form for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.
Reg. No. 4495408 is for “AMA ON DEMAND” with a design element for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the services. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the services, and similarity of the trade channels of the services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
Turning to the first prong of the test, a comparison must be made between the applied-for mark “AMA” in standard character form and the following registered marks:
Reg. No. 2948665 for “AMA AMERICAN MANAGEMENT ASSOCIATION” in a stylized form;
Reg. No. 4385817 for “AMA” in standard character form;
Reg. No. 4324925 for “AMA ENTERPRISE” with a design element;
Reg. No. 4328760 for “AMA AMERICAN MANAGEMENT ASSOCIATION ENTERPRISE” with a design element;
Reg. No. 4157141 for “AMA TV” in standard character form;
Reg. No. 4157142 for “AMA TV” with a design element;
Reg. No. 4495407 for “AMA ON DEMAND” in standard character form; and
Reg. No. 4495408 for “AMA ON DEMAND” with a design element.
Therefore, the marks are confusingly similar.
The fact that Reg. Nos. 4324925, 4157142, and 4495408 contain design elements does not obviate the likelihood of confusion between the applied-for mark and the registered marks. For a composite mark containing both words and a design, the word portion may be more likely to indicate the origin of the services because it is that portion of the mark that consumers use when referring to or requesting the services. Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus, the dominant portion of the registered marks is the wording, which is similar to the applied-for mark “AMA”.
Reg. Nos. 4324925 and 4328760 contain the word “ENTERPRISE,” however, this word is defined by the American Heritage Dictionary as “a business organization” and is therefore descriptive and does not serve as a source identifier. Business type designations and abbreviations such as “Corporation,” “Inc.,” “Company,” “LLC,” and “Ltd.” or family business designations such as “& Sons” or “Bros.” merely indicate applicant’s business type or structure and generally have no source-indicating capacity. TMEP §1213.03(d); see, e.g., Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888); In re Piano Factory Grp., Inc., 85 USPQ2d at 1526; In re Patent & Trademark Servs., Inc., 49 USPQ2d at 1539-40. Matter that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)). Thus, “AMA” and “AMA AMERICAN MANAGEMENT” are the dominant elements of the respective marks.
Accordingly, the marks are confusingly similar in their entireties when giving each feature of the marks their appropriate weight.
Comparison of Services
The respective services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Applicant’s mark is for “entertainment services, namely online non-downloadable videos of individuals responding to interview-style questions on the subjects of lifestyles, social issues, politics, foreign affairs, popular culture, the arts, humor, fiction, and literature” in International Class 041.
Reg. No. 2948665 is for “educational services; namely, providing courses and workshops, live and on video, in business management” in International Class 041.
Reg. No. 4385817 is for “educational services, namely, providing courses and workshops in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; providing online courses in the field of business management via the Internet; providing live and prerecorded online audio and video programs in the field of business management via the Internet; providing on-line discussion forums in the field of business management; online electronic publishing of books, periodicals, articles, and journals in the field of business management” in International Class 041.
Reg. No. 4324925 is for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.
Reg. No. 4328760 is for “educational services, namely, providing on-line courses in the field of business management via the Internet; providing on-line prerecorded audio programs in the field of business management via the Internet; providing courses and workshops, live and on video, in the field of business management and the distribution of training materials in connection therewith; conducting seminars in the field of business management and the distribution of training materials in connection therewith; and organizing exhibitions for educational purposes in the field of business management” in International Class 041.
Reg. No. 4157141 is for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.
Reg. No. 4157142 is for “audio and video broadcasting services over the Internet; audio and video broadcasting services over the Internet in the field of marketing; broadcasting of video and audio programming over the Internet” in International Class 038.
Reg. No. 4495407 is for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.
Reg. No. 4495408 is for “educational services, namely, providing on-line courses in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded audio programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing on-line non-downloadable prerecorded video programs in the fields of business management, finance, professional development, marketing, communication, and sales via the Internet; providing courses and workshops on video in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith; conducting seminars in the fields of business management, finance, professional development, marketing, communication, and sales and the distribution of training materials in connection therewith” in International Class 041.
Notably, applicant offers online non-downloadable videos and registrants offer videos or broadcasting of videos.
Accordingly, with the contemporaneous use of sufficiently similar marks, consumers are likely to conclude that the services are related and originate from a single source. As such, registration must be refused under Trademark Act Section 2(d) and the refusal is continued and maintained.
Applicant must also address the following ground for refusal.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE – NEW ISSUE
“Whether consumers could guess what the product [or service] is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
In the present case, applicant’s services are “entertainment services, namely online non-downloadable videos of individuals responding to interview-style questions on the subjects of lifestyles, social issues, politics, foreign affairs, popular culture, the arts, humor, fiction, and literature.”
An abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents. See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).
A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if:
(1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording;
(2) the specific wording is merely descriptive of applicant’s services; and
(3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s services will recognize it as the equivalent of the merely descriptive wording it represents.
TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).
In the present case, the attached evidence from the Acronym Finder, Tech in Asia, Wikipedia, and Bitcoin.com shows that applicant’s mark “AMA” is an acronym for the wording “ask me anything.” Further, the attached evidence shows that this wording is merely descriptive of a feature, purpose, function of applicant’s services because applicant services are entertainment services featuring video of individuals responding to interview questions and also posing the invitation to viewers to “ask me anything.” For example, Reddit’s You Tube video features the acronym “AMA” and the phrase “Ask Me Anything” to describe the video.
Lastly, a relevant consumer viewing applicant’s mark in connection with the identified services would recognize it as the equivalent of the descriptive wording it represents because applicant’s services consist of videos featuring interviews where the topics are open-ended, meaning on the topic of “anything.” The attached internet evidence shows the phrase “AMA” is often used in connection with services featuring interviews to describe these services. The attached internet evidence from the New York Times and the Atlantic also references the “AMA” or “Ask Me Anything” forum offered by the applicant, Reddit.com, and a feature of this forum is that users can ask individuals “anything.” Internet evidence is attached from Reddit and Upvoted that announces applicant’s service of original video content and the addition of a video component to the “Ask Me Anything aspect of Reddit.com.” This evidence demonstrates that the “AMA” feature of the online forum is now offered in the form of “online non-downloadable videos of individuals responding to interview-style questions.” The phrase “AMA” is often used by third-parties alongside the phrase “Ask Me Anything,” which further impresses the meaning of the acronym “AMA” on consumers.
Accordingly, the applied-for mark is merely descriptive of applicant’s services and registration is refused under Trademark Act Section 2(e)(1).
ADVISORY: SUPPLEMENTAL REGISTER
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Tricia L. Brown/
Examining Attorney
Law Office 121
(571) 270-7892
tricia.brown@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.